Napper v Stapleton - [2025] FedCFamC2G 626

FEDERAL CIRCUIT AND FAMILY COURT OF AUSTRALIA
(DIVISION 2)
Napper v Stapleton [2025] FedCFamC2G 626

File number(s): BRG 208 of 2023

Judgment of: JUDGE MANOUSARIDIS

Date of judgment: 2 May 2025

Catchwords: INTELLECTUAL PROPERTY – copyright – applicant and respondent agreed to collaborate in the production of a book with the applicant agreeing to provide photographs and the respondent to compose the text – respondent published and sold a book containing photographs taken by the applicant without the applicant’s prior approval – whether the respondent has the applicant’s licence to reproduce the applicant’s photographs – the respondent did not have applicant’s licence – by publishing and selling the book the respondent infringed the applicant’s copyright in the photographs – the respondent also infringed the applicant’s copyright in photographs he had taken by the respondent uploading them to his business’s Facebook Page and to a webpage he operates – injunction, delivery up, and compensatory and additional damages awarded.

Legislation: Competition and Consumer Protection Act 2010 (Cth), s 6, Sch 2: ss 18, 29(1)(g), (h)
Copyright Act 1968 (Cth), ss 10, 13(1), 31(1), 32, 35, 36, 115(1), (2), (4), 189, 193(1), (2), 194(2), 195(1), 195AA, 195AB, 195AO, 195AZ, 195AZA
Federal Circuit and Family Court of Australia Act2021 (Cth), s 10

Cases cited: Aristocrat Technologies Australia Pty Limited v D.A.P. Services (Kempsey) Pty Limited (in liquidation) [2007] FCAFC 40
General Tire & Rubber Co. Respondents v Firestone Tyre & Rubber Co. Ltd [1975] 1 WLR 819
IPC Global Pty Ltd v Pavetest Pty Ltd (No 2) [2016] FCA 1332
Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273
Mergenthaler Linotype Co v Intertype Co Ltd (1926) 43 RPC 381
Redbubble Ltd v Hells Angels Motorcycle Corporation (Australia) Pty Limited [2024] FCAFC 15
SW Hart & Co Pty Ltd v Edwards Hot Water Systems [1985] HCA 59; (1985) 159 CLR 466
The New Zealand National Party v Eight Mile Style, LLC [2018] NZCA 596
Universal Music Publishing Pty Ltd v Palmer (No 2) [2021] FCA 434

Division: General

Number of paragraphs: 90

Date of hearing: 30 April 2024

Place: Sydney

Solicitor for the Applicant: Ms S Givoni, Sharon Givoni Consulting

Counsel for the Respondent: Mr P Carasco

Solicitor for the Respondent: Transitional Legal Pty Ltd

Table of Corrections

5 May 2025
In line 3 of paragraph 66 of the judgment “not” has been added before the words “pleaded or alleged facts”.

ORDERS

BRG 208 of 2023

FEDERAL CIRCUIT AND FAMILY COURT OF AUSTRALIA (DIVISION 2)

BETWEEN:
JOHN NAPPER

Applicant

AND:
WILLIAM JOHN STAPLETON

Respondent

ORDER MADE BY:

JUDGE MANOUSARIDIS

DATE OF ORDER:

2 MAY 2025

THE COURT ORDERS THAT:
1.The respondent, by himself, his employees, and his agents, is restrained from infringing the copyright the applicant owns in:
(a)the photographs stored in the USB stick the respondent identifies in paragraph 10 of the affidavit he made on 12 March 2024; and
(b)the photographs reproduced in the attachments to the emails the applicant sent to the respondent at 10.53 pm and 10.58 pm on 25 March 2022,

by reproducing, publishing, or communicating to the public, or authorising the reproduction, publication, or communication to the public, of any of the photographs identified in (a) and (b) (Photographs), or a substantial part of any of the Photographs, without the licence of the applicant.
2.Within 14 days from the date these orders are pronounced, the respondent file and serve an affidavit (Disclosure Affidavit) in which he discloses:
(a)the number of hard copies of the book titled “Convoy to Canberra: The Day Australia Changed Forever” (Book) and of the Photographs that are in the respondent’s power, possession, or control; and
(b)whether the respondent holds or has access to any electronic copy or copies of the Book or the Photographs and, if so, on what computer or other electronic device, and in what form, the applicant holds the electronic copy or copies of the Book or of the Photographs.

3.Within 21 days from the date these orders are pronounced the respondent:
(a)destroy all hard copies (if any) of the Book and Photographs as are disclosed in the Disclosure Affidavit;
(b)permanently erase or cause another or others permanently to erase, from any computer or other electronic device all electronic copies of the Book or the Photographs (if any) as are disclosed in the Disclosure Affidavit; and
(c)file and serve an affidavit in which the respondent deposes to having performed the matters required by orders 3(a) and 3(b).

4.The parties have liberty to apply on such notice as the circumstances warrant to vary or discharge orders 2 and 3, or in relation to any question that may arise in connection with the interpretation, implementation, or variation of orders 2 and 3.
5.The respondent pay to the applicant damages in the sum of $192.02 for the loss the applicant suffered by reason of the respondent’s infringement of the applicant’s copyright in the Photographs.
6.Pursuant to s 115(4) of the Copyright Act 1968 (Cth), the respondent pay to the applicant additional damages of $12,000 in addition to the damages ordered pursuant to order 5.
7.Subject to order 8, the respondent pay the applicant’s costs, other than the costs in relation to mediation.
8.The parties have liberty to apply within 35 days after the date on which these orders are pronounced to vary or discharge order 7.

Note: The form of the order is subject to the entry in the Court’s records.
Note: The Court may vary or set aside a judgment or order to remedy minor typographical or grammatical errors (r 17.05(2)(g) Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth)), or to record a variation to the order pursuant to r 17.05 Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth).
REASONS FOR JUDGMENT
INTRODUCTION

In around February 2022 the applicant, Mr Napper, and the respondent, Mr Stapleton, agreed to collaborate in the production and publication of a book to be titled “Convoy to Canberra: The Day Australia Changed Forever” (Book). The intended subject of the Book was the anti-vaccine mandate protests that took place in Canberra in early February 2022, which culminated on 12 February 2022, when the protesters marched to and gathered outside Parliament House.
Mr Napper and Mr Stapleton did not record in any document the terms of their collaboration; and, as will appear later, the evidence Mr Napper and Mr Stapleton each give of their discussions affords little basis for determining the precise terms of their collaboration. It is common ground, however, that Mr Napper, a professional photographer, and Mr Stapleton, a journalist, at the very least agreed that the collaboration would include Mr Napper contributing photographs he had taken of the protesters, and Mr Stapleton composing the text of the Book. It is also common ground that, before 24 March 2022, both Mr Napper and Mr Stapleton had taken steps in their collaboration. This included Mr Napper emailing to Mr Stapleton photographs of the protesters he had taken, and Mr Stapleton emailing to Mr Napper text he had composed.
On 24 March 2022 Mr Napper met with Mr Stapleton at Mr Stapleton’s home. Mr Napper alleges that, at that meeting, he and Mr Stapleton discussed the editing and layout of the photographs in the Book; Mr Napper laid out the photographs in a rough draft version of the Book; and Mr Stapleton said he would provide the draft Book to the “layout editor”, and, on its return, he and Mr Napper would review the Book. Mr Napper further alleges, however, that by 8 July 2022, without notifying Mr Napper, Mr Stapleton arranged to publish on Amazon the Book containing photographs Mr Napper had provided to Mr Stapleton, as well as photographs taken by another person.
In this proceeding, therefore, Mr Napper claims that he did not licence Mr Stapleton to publish and sell the Book to the extent it contained reproductions of the photographs he had taken and, for that reason, by Mr Stapleton publishing and selling copies of the Book containing Mr Napper’s photographs, Mr Stapleton infringed the copyright Mr Napper owns in the photographs. Mr Napper also alleges that, by publishing and selling the Book containing the photographs, Mr Stapleton contravened s 18 and s 29(1)(g) and (h) of Schedule 2 (ACL) to the Competition and Consumer Protection Act 2010 (Cth) (CC Act).
Mr Stapleton, at least in his response to the statement of claim, and in the affidavits he read at the hearing, says that, at their meeting on 24 March 2022, Mr Napper informed Mr Stapleton that the collaboration was “the job from hell”, and that Mr Stapleton could do what he wanted with the photographs Mr Napper had provided to him. Mr Stapleton further says that the material Mr Napper had provided to him was not in a state fit to be forwarded to an interior designer; and that, consequently, Mr Stapleton had to perform substantial work Mr Stapleton alleges Mr Napper ought to have performed, but failed to perform. In those circumstances, Mr Stapleton contends that he was at liberty to include in the Book the photographs Mr Napper had provided to him without further recourse to Mr Napper.
The determination of Mr Napper’s claims turns on whether the collaboration between Mr Napper and Mr Stapleton included a term by which Mr Napper licenced Mr Stapleton to use the photographs he had taken and, if so, whether that licence extended to Mr Stapleton using the photographs in the manner in which Mr Stapleton used the photographs in the Book as published.
EVIDENCE AND SOME FINDINGS
Agreement to collaborate
According to Mr Napper, from about 5 February 2022 to 12 February 2022, he and Mr Stapleton discussed the possibility of Mr Stapleton publishing a book “with literary content and supported by images relating to the Convoy to Canberra”, and which would be titled “Convoy to Canberra: The Day Australia Changed Forever”. Mr Napper further says that he and Mr Stapleton agreed they would collaborate to create the literary content and images for the book.[1] Although Mr Napper does not set out the conversations from which it is possible to determine whether an agreement was reached, and if so, what that agreement was, Mr Napper asserts that he and Mr Stapleton made an agreement, the “essential terms” of which were as follows:[2]
[1] Affidavit J Napper 30.01.2024, [24], [25]
[2] Affidavit J Napper 30.01.2024, [26]
(a)Mr Napper was to provide Mr Stapleton with more than 150 photographs he “took between February 2022 and March 2022 in relation to the Convoy to Canberra demonstration”.
(b)Mr Napper would act as the photo editor of the images he would take, meaning that he would select and edit the images and decide on their layout appearing in the Book.
(c)Mr Stapleton was to draft the storyline of the Book, “comprising substantially of the literary content” for the Book.
(d)Mr Stapleton was to publish the Book in hard copy and electronic formats.
(e)Mr Napper and Mr Stapleton would equally share the production costs of the Book.
(f)Mr Stapleton would attribute Mr Napper in the book as the photographer and photo editor of the images by the following words being included in the Book:
“Professional photographer John Napper acted as picture editor for the project and his company Action in Focus provided wonderful written and photographic documentation of these historical events.”
(g)Mr Napper and Mr Stapleton would equally share the proceeds of sale of the Book.
(h)Mr Napper would licence Mr Stapleton with the right to reproduce, publish, and communicate the images for use in the Book, on the condition that such licence would subsist while Mr Stapleton complied with the essential terms of the agreement, in particular, but not limited to, Mr Stapleton paying to Mr Napper one half of the proceeds of sale of the Book.
Mr Napper’s assertions do not constitute evidence; and Mr Napper’s assertions of what he says are the terms of his collaboration with Mr Stapleton afford no basis for determining what those terms were.
Mr Stapleton says that he and Mr Napper met at “an impromptu meeting” of “vloggers” and “streamers” in a room at the Epic Showgrounds in Canberra. During the meeting Mr Stapleton and Mr Napper discussed working on a “love” project under which Mr Stapleton could contribute the literary component of a book, and Mr Napper would contribute the images, and act as a picture editor. Mr Stapleton further says that “it was suggested” that he and Mr Napper would equally share the costs and any profits.[3] Mr Stapleton does not say when the meeting occurred. Mr Napper appears to agree he had met Mr Stapleton at the Epic Showgrounds in Canberra, but he “refutes” that the meeting was attended by “vloggers” and “streamers”.[4] Mr Napper also appears to agree that he and Mr Stapleton spoke about publishing a book where Mr Stapleton could contribute the literary component, and Mr Napper would contribute the images and act as a picture editor; and that, moreover, Mr Stapleton and Mr Napper would equally share in the costs and any subsequent profit in the production and sale of the Book.[5]
[3] Affidavit W J Stapleton 12.03.2024, [3]-[4], [6]
[4] Affidavit J Napper filed 06.04.2024, [4]
[5] Affidavit J Napper filed 06.04.2024, [6]
Steps taken before 24 March 2022
According to Mr Stapleton, after his discussions with Mr Napper, he commenced the project “on the understanding that the agreement between the parties was that neither party would be paid for their services, that the contributions to the book would be [Mr Napper] providing images and subsequently rights-to-use of such, and also act as picture editor, and that [Mr Stapleton] would provide the literary component, contacts such as Interior and Exterior Editors, and then the publishing of such”.[6] Mr Stapleton says he sent to Mr Napper each chapter of the Book as it was written; and Mr Stapleton did this to enable Mr Napper to commence deciding which images would suit the chapter.[7] There is in evidence an email Mr Stapleton sent to Mr Napper at 10.24 am on 2 March 2022 which supports this part of Mr Stapleton’s evidence. In that email Mr Stapleton said:[8]
[6] Affidavit W J Stapleton 12.03.2024, [8]
[7] Affidavit W J Stapleton 12.03.2024, [27]
[8] Affidavit J Napper filed 06.04.2024, at page 12; annexure JN-1
Attaching the current state of the draft.
There’s obviously still a fair bit of work to do but thought this way you can get an idea of it and start sorting the pics; when you’ve got a spare second from The Drowned World.
I’m also thinking some of the obvious gaps in the story line could be easily filled by extended captions on pics.
Anyway, getting there.
I’m confirming with the interior design woman that we will provide copy and pics on the 15th, she said she would be available to do the job middle of the month.
Jessica has sent some books through; the hardcover does look good; not sure how cost effective it is.
But the train has left the station!!
All the best. The situation up there looks absolutely unbelievable.
John.
Here’s the copy so far….
Mr Napper says that between February 2022 and April 2022 he and Mr Stapleton exchanged “several correspondences regarding writing, editing, layout and production of the Book”.[9] Mr Napper annexed to his affidavit filed on 6 April 2024 an email he sent to Mr Stapleton on 22 March 2022 to which he attached 84 photographs.[10] Mr Napper also says he communicated with Ms Bell, the cover designer for the Book. That evidence is supported by an email Mr Stapleton sent to Ms Bell and to Mr Napper on 17 February 2022, which is as follows:[11]
[9] Affidavit J Napper 30.01.2024, [27]
[10] Affidavit J Napper filed 06.04.2024, [27.a.]; annexure JN-7
[11] Affidavit J Napper filed 06.04.2024, [20]; annexure JN-4
John and Jessica,
Please meet each other.
John is a very accomplished professional photographer who has taken some wonderful shots of recent events, and Jessica is a to-her-fingertips professional cover designer who is entirely onboard with the project.
For John Napper’s understanding I will include the email exchanges we have had on this subject so far.
Could you two please deal directly with each other in sorting the best cover image. Thanks.
PREVIOUS COMMUNICATION ON COVER:
FIRST EXCHANGE:
As mentioned, the Australian Independent Free Press Network has asked me to coordinate the production of a book on recent events.
They want a hardcover coffee table sized book, featuring some of the wonderful photography that was done. And of course text.
The cover is essentially simple:
THE DAY AUSTALIA CHANGED FOREVER
THE AUSTRALIAN INDEPENDENT FREE PRESS NETWORK
….
Mr Napper says he also communicated with Ms Amie McCracken, the “interior designer” for the Book, in relation to the editing, layout, and production of the book.[12] Mr Napper says he provided to Ms McCracken a mock-up of the book that was to be published.[13] Mr Napper has not annexed to his affidavit the messages he says he exchanged with Ms McCracken. On the morning of the hearing, however, Mr Stapleton, through his lawyer, Mr Carasco, sought to read an affidavit Mr Stapleton had made on 30 April 2024, and which had been filed on the morning of the hearing.[14] I disallowed Mr Stapleton from reading the affidavit.[15] Notwithstanding my having rejected the affidavit, Mr Napper was cross examined on material that appeared in the affidavit.
[12] Affidavit J Napper 30.01.2024, [27]
[13] T18.10
[14] Affidavit W J Stapleton 30.04.2024
[15] I marked the affidavit “MFI1”
Mr Stapleton was asked in cross-examination about the emails he exchanged with Mr Napper:[16]
MS GIVONI: . . . Now, there were emails sent from John Napper to you with the final layout of the book – proposed final layout, I should say. Did you get those emails? --- Those emails do not show the final layout of the book, and bear no resemblance to the end product.
Were those emails a rough draft of the book?‑‑‑I think rough draft is overstating the matter. These were very preliminary efforts to work out what pictures might go where.
But if there was – but you can see that there was a draft sent to you. Is that correct?‑‑‑My recollection is that I sent him a draft, then he added some images into that draft. I had already experimented with putting various pictures in various of the text to see what might, or might not work. My recollection is that this was already beyond the deadline, which Mr Napper had failed to meet, and so I was simply trying to assist him to reach some conclusion.
But if there was drafts [sic] being sent backwards at forwards, at any point in time did you send John Napper the final draft before the publishing process went ahead?‑‑‑There is no final draft for the publishing process. You provide the interior designer with lists of photographs, and I can – we have all those emails, that would coincide with each chapter, so you go chapter one, and these are the images which may or may not – which would work for them, and so on and so forth, so each chapter would then have a list of the photographs which would suit with that, so that – there is no draft as such. It’s not our job to lay out the text.
At any point in time ‑ ‑ ‑?‑‑‑That’s the interior designer’s job.
[16] T46.20- T46.45
The cross-examiner did not identify the object she described as the “draft sent to you”, but it may be the cross-examiner had in mind two emails Mr Napper sent to Mr Stapleton on 25 March 2022 which Mr Napper annexed to his affidavit of 6 April 2024, one sent at 10.53 pm, and the other at 10.58 pm.[17] The first email contains the heading “the job from hell lol”, and attaches a document the email describes as “Part 1 of convoy to canberra.docx”. The attached document is a draft of the first seven chapters of the Book containing both text and photographs. The second email contains the heading “job from hell part 2”, and attaches a document the email describes as “Part 2 of convoy to canberra.doc”. That attached document is a draft of chapters 8, 9 and 10 of the Book, and contains text together with photographs. The attachments to the two emails constituted a complete draft of the Book.
[17] Affidavit J Napper filed 06.04.2024, [27.b.]; annexure JN-7
Meeting of 24 March 2022

It is common ground that on 24 March 2022 Mr Napper visited Mr Stapleton at his home. Mr Napper’s account of what occurred at the meeting, as given in his affidavit made on 30 January 2024 (first affidavit), is as follows:
(a)Mr Napper visited Mr Stapleton “to discuss the editing and layout of the Images in the Book and to layout the Images in the Book”.[18]
(b)During the meeting Mr Napper “laid out the Images in the Book . . . in a rough draft version”.[19]
(c)Mr Stapleton told Mr Napper that he “wanted it done” as quickly as possible, and said he and Mr Napper would be able to review and make any changes “when the initial draft came back”. Mr Stapleton said that he “would email the Book to the layout editor who would make any changes and return this first draft to [Mr Stapleton and Mr Napper] for final approval or to make any further changes”.[20]
(d)When leaving Mr Stapleton’s house, Mr Napper asked Mr Stapleton if he would like Mr Napper to email the “draft to layout editor”, or whether Mr Stapleton would prefer to do that. Mr Stapleton said he would like to send the rough draft to some of his contacts, noting that he and Mr Napper would have the ability to review and further edit the photos and any other part of the book when “it was returned”.[21]
(e)Also when Mr Napper was leaving Mr Stapleton’s house, Mr Stapleton said that he would like to use “A Sense of Place Publishing” to publish the Book. Mr Napper said: “do whatever you want”.[22]
(f)At the time he left Mr Stapleton’s house, it was clear to Mr Napper that he would get an opportunity to review the final version and edit photos which were still in “out of camera” format, and, therefore, not edited for final print.[23]
[18] Affidavit J Napper 30.01.2024, [28]
[19] Affidavit J Napper 30.01.2024, [29]
[20] Affidavit J Napper 30.01.2024, [29]
[21] Affidavit J Napper 30.01.2024, [30]
[22] Affidavit J Napper 30.01.2024, [30]
[23] Affidavit J Napper 30.01.2024, [30]
Mr Stapleton gives the following account of what occurred on 24 March 2022:[24]
The supply of the photographs occurred after the Applicant attended my property to work on the project together. After spending a considerable amount of time and staying overnight, that afternoon and the next afternoon, the Applicant had done very little and stated in the afternoon that day that this was a “project from hell, and do what you like?” [sic], referring to the photographs, at which time the Applicant left the USB stick with the photos and then left the property. I retain that USB stick to this day.
[24] Affidavit W J Stapleton 12.03.2024, [10]
Both Mr Napper and Mr Stapleton were cross-examined about the meeting of 24 March 2022. The evidence Mr Napper gave includes the following:
[W]hen I was at Mr Stapleton’s residence, that he stated on numerous occasions, “Let’s just hurry this up. We can send it to Amy, and she will do the prettying up, and then that draft will come back to us, and we can make any final changes then”, and that’s when the final photo editing would take place. When those images had been selected, and confirmed as the ones that would be in the book.
So the designer would design the whole layout for print, and then essentially have to do the photo part again later. Correct?‑‑‑Yes, that’s the way that it proceeds.[25]
. . . .
As you were in the charge of the layout [sic], did you email the interior designer, or graphic designer this text that had been allegedly predetermined prior?‑‑‑When I left Mr Stapleton’s house, as I’ve already mentioned, that draft including that text was left with him, and he chose to email that to the interior designer. That was – that was his choice to do that. He took over that. I gave him the option, “Do you want me to do this, or do you want to do this?”, and he said to me that, “I will email this information to the designers.”
One moment. Do you recollect ever stating that Amy can do the graphic design? And – sorry. Did you ever state to the respondent that Amy could do the design and typesetting?‑‑‑I don’t recall those exact words. I do recall that Mr Stapleton had said to me on numerous occasions that Amy, the graphic designer, would be responsible for the layout of the book, and it would come back to us to make any alterations – changes that we deemed fit. I will state that at the time that the book layout was left with Mr Stapleton, it was very clear that it was a very rough draft, and that Amy was going to do – work her magic, I think, were his words on the – on the layout and design of the book, and it would come back to us.
So at that point, you conceded to Amy, at least to some degree, the layout of the book. So is that correct?‑‑‑On the condition that it came back to us, and we would make any final changes and corrections.[26]
[25] T23.40-T24.5
[26] T26.15-T26.30
It was put to Mr Napper that it was his responsibility to communicate with Ms McCracken, in response to which Mr Napper said:[27]
… When I left Mr Stapleton’s house, I asked him did he want me to contact Amy with this information, or did he want to do it. Mr Stapleton took over that role at that particular point of time. There was no photo editing done at that particular point of time. It was just let’s send this off to Amy, she will do her stuff, and it will come back. Because Mr Stapleton sent it, I assumed that it would come back to him, not to me, and therefore I was expecting him to contact me.
But – so there was agreement that he agreed to send the material to Amy?‑‑‑Yes.
But as a – but lines of communication had been opened by the respondent to Amy, so that you could communicate directly with her as a co-collaborator. Correct?‑‑‑That is correct, yes.
So there was absolutely nothing to stop you from sending an email to Amy. Correct?
[27] T28.20- T28.30
In evidence he gave under cross-examination Mr Stapleton said that Mr Napper “walked away from the project at that point”, and the cross-examiner asked him what Mr Stapleton meant by “walked away”. Mr Stapleton gave the following evidence:[28]
… He didn’t do any of the things that he was expected to do. He didn’t act as the picture editor. He didn’t coordinate with the other photographers involved, he didn’t coordinate with the interior designer. He didn’t coordinate with the cover designer. None of the things that, as a picture editor, Mr Napper would have been expected to do, did he do. He simply didn’t do that – any of those things.
Did John Napper say anything to you when he allegedly walked away?‑‑‑ ” Do what you like with them. Do what you like.” [sic]
Did he send you any text message or email to say that he was walking away or words to that effect?‑‑‑He had been at my house for roughly two days and there were phone calls or emails when I got back. I was picking up a friend from Sydney so I left him in my house. And he left a jumbled mess on a file which I couldn’t open. It took quite some time to open it. I rang him once or twice trying to sort out how to open it. When I did open it, it was nothing but a jumbled mess and he walked away from the project, so. I don’t know what else I could have done.
When you mention the walking away – first of all, why did – at the time, why didn’t you – it sounds like you have these complaints that you’re now expressing. Did you contact John Napper in relation to those complaints?‑‑‑I’m sorry, you’re freezing up. Can you ask the question again?
Did you – you had some complaints about John Napper that you’ve now expressed. Did you contact John Napper with your complaints?‑‑‑He had walked away from the project. I gave up on him. I just proceeded as best I could. I didn’t do anything for several weeks. I was absolutely nonplussed by the fact that he had failed to do what he had said he would do and – and I proceeded.
[28] T44.15-T44.40
Later in his cross-examination Mr Stapleton was asked about his evidence that Mr Napper “walked away”:[29]
When you say that he walked away from the project, that’s a vague term. Can you elaborate on what you actually mean by that. What words did he actually say? And when? Do you have a text message? To that effect.
HIS HONOUR:   Hang on. You’ve asked him three questions.
MS GIVONI:   Sorry.
HIS HONOUR:   So the question is, you said he walked away. Do you recall – let’s just be clear about it, do you recall those words, or words to that effect being said to you, Mr Stapleton? By Mr Napper?‑‑‑The exact words that I remember were, “Do what you like with them”, and, “This is the job from hell”, and he had expressed general frustration, and inability to do the project over a number of days, and in the preceding fortnight before he arrived. Sorry. 10 days after the deadline that he then arrived at my house, so there had been some level of inability and frustration.
[29] T47.5-T47.20
As I have already noted, at 10.53 pm and 10.58 pm on 25 March 2022 Mr Napper sent to Mr Stapleton two emails with the subjects “the job from hell lol” and “job from hell part 2”, respectively, each attaching a document which together comprised a draft of the Book containing text and photographs.[30] Neither Mr Napper nor Mr Stapleton explain in their affidavits the circumstances in which, or the purposes for which, Mr Napper sent these emails. When comparing the draft of the Book with the Book as published,[31] it is apparent that the text of both is the same or substantially the same. But a number of the photographs contained in the draft Book are not contained in the Book as published. Further, the photographs (of which there are around 184) appear to have been placed in a rather haphazard fashion, at least in parts of the draft, suggesting that Mr Napper did not present the draft as a completed draft. Of particular note is that although many photographs appear between text, most appear on pages without text (see from pages 56 onwards). Further, a number of photographs are accompanied with the instructions to “rotate” and “rotate and fit to page”. This may indicate that further editorial work was required on the Book before it could be submitted to an interior designer.
[30] Affidavit J Napper filed 06.04.2024, [27.b.]; annexure JN-7
[31] Being exhibit A
Although Mr Napper does not in his affidavits say anything about the purpose for which, or the circumstances in which, he sent the emails, he addresses the subjects he assigned to the emails that attached the two parts of the draft Book, namely, “the job from hell lol” and “job from hell part 2” respectively. Mr Napper says that he intended the words “the job from hell” to be a reference to the flood situation in Queensland; and that he added the letters “lol” as a “light-hearted comment with all that was occurring at the time”.[32]
[32] Affidavit J Napper filed 06.04.2024, [11]; annexure JN-1
I do not accept Mr Napper’s evidence that he intended “the job from hell lol” to be a reference to the flood situation in Queensland. It is difficult to see how the expression could reasonably be construed to apply to the floods Queensland was experiencing at the time. In particular, it is difficult to see how floods could be referred to as “a job”. It is very likely, and I find, that the object Mr Napper intended to denote by the words “the job from hell lol” is the compilation of the document that Mr Napper attached to his email sent at 10.53 pm on 25 March 2022, namely, “Part 1 of convoy to canberra.docx”. My confidence in so finding is reinforced by the email Mr Napper sent to Mr Stapleton at 10.58 pm on 25 March 2022 with the subject “job from hell part 2” to which he attached “Part 2 of convoy to canberra.doc”. The object Mr Napper intended to denote by the words “job from hell part 2” is the compilation of the document that was attached to the email, namely, “Part 2 of convoy to canberra.doc”.
Text exchanges of 9 April 2022
In evidence given under cross-examination, Mr Napper said that he did not have any further contact with Mr Stapleton until 9 April 2022, when he sent a text message to Mr Stapleton asking “How’s things”. Mr Napper recalls receiving the following text message from Mr Stapleton:[33]
Well, after that last debacle I haven’t progressed the project much. I was thinking of just putting out under Sense of Place Magazine, and checking with you if you had any objects to use of your pics, and suggesting we reach some agreement where if there is any money, we pay you up to 2500 for their use, although most books do not make money, and I doubt this one will either. We lost moment, which is unfortunate.
[33] T29.45 (errors in original)
Mr Napper was cross-examined about what he understood Mr Stapleton meant by “[w]e lost momentum”, and about Mr Stapleton’s proposal that “we reach some agreement where if there is any money, we pay up to 2500 for their use”. Mr Napper said:[34]
… My recollection is that there was a statement to the fact of two and a half thousand dollars, like, that was a total change to the agreement. I do remember that. The rest of that is – I don’t recall – it’s written in front of me, but I don’t recall those exact words.
[34] T30.35
Mr Napper also said that he recalled responding to this text message by stating: “Yes. I could have sold many if I had copies”.[35]
[35] T30.10
Mr Napper was asked whether he recalled having received a text message from Mr Stapleton in response to this text message. Mr Napper gave the following evidence:[36]
[36] T30.15 - T30.35
And the respondent’s reply was:
All right. Well, it’s only a few days work.
Do you recollect that?‑‑‑It’s in front of me, so I assume that I read it.
HIS HONOUR:   Well, do you recollect it, because don’t be confused. These are said to be copy-paste.
MR CARASCO:   Yes, your Honour.
HIS HONOUR:   Do not be misled by thinking – I mean, they may well be accurate, but there’s nothing on the face for the show was actually said to you, Mr Napper.
MR CARASCO:   Yes.
HIS HONOUR:   So you’re being asked from your recollection. All right?‑‑‑My recollection is that there was a statement to the fact of two and a half thousand dollars, like, that was a total change to the agreement. I do remember that. The rest of that is – I don’t recall – it’s written in front of me, but I don’t recall those exact words.
Mr Napper was also asked whether he acknowledged that Mr Stapleton had seen there had been a change in the agreement: [37]
MR CARASCO: So do you acknowledge that the respondent had seen that there had been some change to the agreement – the original agreement. For some reason, whether it was the floods, or whatever reason it was there had – something had occurred where the project lost momentum, and hadn’t progressed any further?‑‑‑Something happened. The thing that happened was Mr Stapleton made no contact with me, so I think that was where the momentum was lost as far as I understood. I wasn’t aware of what the momentum that was lost. Simply that it was lost.
[37] T30.40 - T30.45
Events after 9 April 2022
On 18 May 2022 Mr Napper sent a text message to Mr Stapleton asking whether there was “any book news”. Mr Stapleton responded on the same day with the following text message:[38]
Took me weeks to sort it all out and now it’s with Amie. At least now I know what to do but it was a real brain buster for a while.
[38] Affidavit J Napper 30.01.2024, [32]
On 4 July 2022 Mr Napper texted Mr Stapleton enquiring whether there were “any news on book”; and on 8 July 2022 Mr Napper again texted Mr Stapleton stating that he “had a multitude of people asking re book”, and asking whether there was “any news”. By that time Mr Stapleton had arranged to publish the Book through “A Sense of Place Magazine”, being Mr Stapleton’s “own publishing business”.[39] The back cover of the Book contains a number of quotes from protesters, and the following:
John Napper of Focus in Action Photography provided a large number of the photographs.
Professional photographer “Damo” of Minco Photography also provided a significant number of images.
Janaya Markwell provided assistance to the project and has proved herself to be one of the most significant documenters of Australia’s Freedom Movement.
John Stapleton, veteran journalist, editor of A Sense of Place Magazine and author of Unfolding Catastrophe: Australia wrote the text and acted as project editor and publisher.
[39] Affidavit W J Stapleton 12.03.2024, [11]
Mr Stapleton responded to Mr Napper’s text message of 8 July 2022 as follows:
Just became available on Amazon a few hours ago. You are credited on the back cover and in the acknowledgments.
I’ve put it out under the auspices of the mag
Mr Napper and Mr Stapleton then exchanged the following text messages:
Mr Napper:hmmmm
thought it was more of an equal project than that
paid for
who else paid for it?
anyone credited?
pretty pissed at that
we indicated from the beginning it was an equal project…
and now i get credited with
“some images” ….
nothing was mentioned for
months …
and now without any final input its all of a sudden on Amazon…
you told me they would get back so we could approve final draft…
who did that final ok?
Mr Stapleton: You agreed to act as picture editor but didn’t and delayed the project for months. If that was your intention you succeeded.
Your final words were do what you like.
Mr Napper:you’re not serious….
i came down and went through all images until you were happy…
i wasn’t happy with the final layout but you told me we had a final approval…
you were still working on your part…
you’re saying i caused the delay?
how many months since i stayed at your place….
and you’ve not said boo since
do what you like was in regard to getting it to your people…
mate I’m pretty easy going but your attitude in this is pretty poor … to say the very least
i did the photo layout how you wanted… ffs…
i was at your place 24th March… and handed everything to you then…
and you’re now saying i delayed it for months…
i am pissed… if you can’t guess…
you also said it was around 40 dollars…
its now 57…
for 57 i could have had a landscape layout as i wanted but you wanted portrait… with full page pics…
you never even asked me for a final o.k…
never showed me a thing…
that is a pretty low thing to do…
and you get a sense of place all
….
how much did the project cost?
how much did damo or janaya contribute?
you’ve put multiple chapters on your magazine…
seriously…. you think that’s ok…
when did you ever contact me to tell me what you were struggling with…
i could have called in after Canberra…
i laid out that entire book the way you wanted and didn’t hear a thing from you…
only after i contacted you…
you have never ever mentioned any of this…
pull the book off Amazon…
do a second edition and get it right…
i will spend whatever time is needed to relaunch properly…
I’m guessing you made no use of the contacts we have prior to launch…??
wonder just how much this cost?
sad….
According to Mr Napper, on 31 August 2022 Mr Napper’s lawyer sent a letter to Mr Stapleton demanding, among other things, that he cease using Mr Napper’s photographs.[40] The letter, however, is not in evidence; and, in evidence he gave under cross-examination, Mr Stapleton said he did not receive the letter.[41]
[40] Affidavit J Napper 30.01.2024, [48]
[41] T62.40
What occurred at the meeting of 24 March 2022?
There are a number of matters that tend to support Mr Stapleton’s account of what occurred at the meeting of 24 March 2022, and to raise doubts about Mr Napper’s account.
(a)First, there is my finding that, in his emails to Mr Stapleton on 25 March 2022, Mr Napper intended the words “project from hell” to apply to the project to produce the Book. That finding increases the probability that, at his meeting with Mr Stapleton on 24 March 2022, Mr Napper used the words “project from hell”, and that he intended those words to apply to the collaboration he and Mr Stapleton had undertaken to produce the Book. That, in turn, renders more probable Mr Napper’s also having stated that Mr Stapleton could do what he liked with the photographs in that this would have relieved Mr Napper of having to further participate in the “project from hell”.
(b)Second, there are the emails Mr Napper sent to Mr Stapleton in the evening of 25 March 2022, after Mr Napper had left Mr Stapleton’s home, attaching what I have found to be a draft of the Book which included photographs. That is inconsistent with Mr Napper’s evidence that, during his meeting with Mr Stapleton, Mr Napper “laid out the Images in the Book . . . in a rough draft version”. Had this occurred, there would have been no need for Mr Napper to have emailed, after the meeting, the draft Book.
(c)Third, there is the text message Mr Stapleton sent to Mr Napper on 19 May 2022 in which he said that it had taken him “weeks to sort it all out”. This supports Mr Stapleton’s evidence that at the meeting of 24 March 2022 Mr Napper had left a “jumbled mess on a file”, and that it took Mr Stapleton “quite some time to open it”.
(d)Fourth, there is the email Mr Stapleton sent to Mr Napper on 2 March 2022, in which Mr Stapleton said that he was “confirming with the interior design woman that we will provide copy and pics on the 15th, she said she would be available to do the job middle of the month”. That supports the evidence Mr Stapleton gave that there was a deadline of 15 March 2022 by which the Book with the photographs would be provided to the designer, but that deadline had not been met.
(e)Fifth, Mr Napper accepts that at the meeting he told Mr Stapleton “do whatever you want”. In his first affidavit Mr Napper says he uttered these words when he was leaving Mr Stapleton’s home in response to Mr Stapleton saying that he would like to use “A Sense of Place Publishing” to publish the book. In his text message of 8 July 2022, Mr Napper said that “do what you like was in regard to getting it to your people”, not in regard to a particular publisher.

There are, however, four factors that support Mr Napper’s account of the meeting and, moreover, support findings that Mr Napper did not, at the meeting of 24 March 2022, intend to convey to Mr Stapleton that Mr Napper did not wish to take any further part in the publication of the Book, and that Mr Stapleton could do as he liked with the photographs Mr Napper had provided him; and that Mr Stapleton could not reasonably have understood Mr Napper as having conveyed any such intention.
(a)First, there are the two emails Mr Napper sent to Mr Stapleton late in the evening of 25 March 2022, after the meeting of 24 March 2022, to which Mr Napper attached a draft of the Book containing the text Mr Stapleton had composed and photographs Mr Napper had taken and selected. If, as Mr Stapleton contends, Mr Napper had abandoned the project at the meeting of 24 March 2022, Mr Napper would not have taken the trouble to prepare and provide to Mr Stapleton a draft of the Book after the meeting. Further, his sending a draft of the Book supports Mr Napper’s evidence that he and Mr Stapleton agreed that Mr Stapleton would arrange to provide a draft of the Book to the interior designer; for otherwise Mr Napper would have sent to the interior designer the attachments he sent to Mr Stapleton late in the evening of 25 March 2022.
(b)Second, on 9 April 2022, 18 May 2022, and 8 July 2022, Mr Napper sent text messages to Mr Stapleton asking him for news of the progress Mr Stapleton had made. That by itself supports Mr Napper’s account to the extent he says that he and Mr Stapleton agreed that Mr Stapleton would get back to Mr Napper after the interior designer was to do work on the Book. Had Mr Napper abandoned the project, as Mr Stapleton contends Mr Napper did at the meeting of 24 March 2022, Mr Napper would not have made any further inquiries about the progress of the project.
(c)Third, had Mr Napper abandoned the project, or if, as Mr Stapleton asserted in his text messages to Mr Napper on 8 July 2022, Mr Stapleton had understood Mr Napper’s statement “do what you like” as authorising Mr Stapleton to continue with the publication of the Book without further recourse to Mr Napper, it is reasonable to expect that Mr Stapleton would have informed Mr Napper of those matters when he responded to the text messages on 9 April 2022 and 18 May 2022. Mr Stapleton instead did not so inform Mr Napper of these matters until 8 July 2022.
(d)Fourth, in his text of 8 July 2022 Mr Napper said that Mr Stapleton had told him that “they would get back so we could approve final draft”. That is consistent with what Mr Stapleton says occurred at the meeting of 24 March 2022.
Given these matters, the most likely inference that may be drawn about what occurred at the meeting on 24 March 2022 is as follows:
(a)Mr Napper and Mr Stapleton met on 24 March 2022 to create or finalise a draft of the Book that would incorporate the text Mr Stapleton had composed, and the photographs Mr Napper had taken, with a view to providing the draft to the interior designer, Ms Amie McCraken;
(b)Mr Napper brought with him a USB containing the photographs he had taken, but neither Mr Stapleton nor Mr Napper could extract them in a way that could enable Mr Napper and Mr Stapleton to produce a draft of the Book containing text and photographs; and
(c)both Mr Napper and Mr Stapleton became frustrated; and towards the end of their meeting Mr Napper described the project as the “project from hell”; and by telling Mr Stapleton “do what you like”, Mr Napper in effect told Mr Stapleton that Mr Stapleton should take the necessary steps to provide a draft of the Book to the interior designer.
I am not satisfied that Mr Stapleton expressly said to Mr Napper that he would consult Mr Napper after the interior designer were to review the draft. I so find, however, because, given the nature of the collaborative work Mr Napper and Mr Stapleton had performed, which included Mr Napper having paid $650 towards the interior designer’s fees (a matter admitted on the pleadings), it would have gone without saying – that is, it would have been commonly understood - that Mr Stapleton would contact Mr Napper after the interior designer performed work on the draft version of the Book.
Uploading of Mr Napper’s photographs
Mr Napper has adduced evidence which shows that on 6 February 2023 Mr Stapleton uploaded a post on the Facebook Page of a “A Sense of Place Magazine” using one of Mr Napper’s photographs, and from 2 to 10 February 2023 Mr Stapleton uploaded photographs Mr Napper has taken to blogs that appear on Mr Stapleton’s webpage “ .com/”.[42] Mr Stapleton was cross-examined about his uploading these images, and it would be convenient to set out what he said:[43]
MS GIVONI:   On 6 February, did you use one of John Napper’s images to publish several blogs on your website?‑‑‑I changed the – on which date, sorry?
6 February 2024?‑‑‑I changed the date on a couple of blogs to mark the second anniversary. I believe I deleted most of his images, if not all of them. It’s the simple matter of changing a couple of digits. Changed from ’23 to ’24.
But did you use several of John Napper’s images to publish some blogs on your website? I would like to, at this point, refer you to page 51 of John Napper’s evidence dated ‑ ‑ ‑?‑‑‑These have been up there for a good two years.
HIS HONOUR:   Paragraph 51, or page 51?
MS GIVONI:   Paragraph 51 of the John Napper evidence dated 30 January 2024?‑‑‑These were all originally published in A Sense of Place Magazine, and quite a number of them, if not all of them were all published in the magazine that, with my own words, I might say, that Mr Napper was associated with, so he certainly felt free to use my words, and – sorry. What was the question? It was simply after ..... anniversary. There wasn’t any news of any of his images. These have been up online for quite some time without any complication. He ..... asking that these stories be removed, or any such thing, to my knowledge anyway, and they were just updated ..... anniversary. They had been online the last – previous 12 months.
THE PLEADINGS
[42] Affidavit J Napper 30.01.2024, [50]-[51]
[43] T63.40-T64.15
Statement of claim
In his statement of claim, Mr Napper alleges as follows:
(a)Mr Napper and Mr Stapleton entered into an agreement (Asserted Agreement) in terms of the agreement Mr Napper asserted in his affidavit filed on 30 January 2024, the terms of which I have reproduced in paragraph 7 of these reasons.
(b)Pursuant to the Asserted Agreement, Mr Napper provided “the Images” to Mr Stapleton, and paid $650 to Ms Amie McCracken on or about 10 March 2022. The expressions “The Images” is defined as 150 photographic images Mr Napper alleges he had created of the protests and which, under the Asserted Agreement, he had agreed to provide to Mr Stapleton.
(c)Copyright subsists in the Images of which Mr Napper is the owner.
(d)From a date unknown, but from at least 8 July 2022 Mr Stapleton published, reproduced, or communicated to the public the Images or a substantial part of them, by the sale and offering for sale of the Book, or authorised the carrying out of such conduct.
(e)The conduct referred to in (d) was done without the licence of Mr Napper; and, for that reason, Mr Stapleton infringed Mr Napper’s copyright in the Images, and had infringed Mr Stapleton’s moral rights under s 195AZ of the Copyright Act in respect of the author’s rights of attribution.
(f)Mr Stapleton’s conduct in publishing the Book with the Images without the licence of Mr Napper Mr Stapleton also constituted a contravention of s 18 and s 29(1)(g) and (h) of the ACL.
(g)Further, Mr Stapleton breached the Asserted Agreement by failing to give Mr Napper the opportunity to edit the images for the Book; by failing to attribute Mr Napper as the creator of the Images reproduced in the Book with attributions in the agreed form; and by failing to pay to Mr Napper any of the proceeds of sale from the Book.
Response
In his response, Mr Stapleton:
(a)admits he and Mr Napper discussed a collaboration “to produce the literary content with the aim of publishing a book”; but such discussions were based on Mr Napper and Mr Stapleton donating their time and expertise, being storyline narrative writing by Mr Stapleton, and photographic images by Mr Napper, on a purely voluntary basis, “and not representative of any “agreement”, especially in relation to payments, income or other remuneration of any kind”;[44]
(b)admits Mr Stapleton was to draft the storyline of the book comprising substantially all of the literary content of the Book; and that Mr Stapleton intended to publish the Book in hard copy, but only if the material was able to be produced and was of sufficient publication quality;[45]
(c)says there was no agreement relating to the sharing of costs or income, other than Mr Napper agreeing to help defray some of the costs of Mr Stapleton by offering to pay a contribution towards the pre-production costs, namely, half of the interior designer’s fees; and also to pay half of the cover designer’s fees;[46]
(d)says that Mr Napper contributed $650 towards the project, being half of the $1,300 interior designer’s fees, but Mr Napper paid no other amount;[47]
(e)denies there was any agreement about attribution, although Mr Stapleton says the Book attributed Mr Napper for the photographic content of the Book;[48]
(f)denies there was any agreement that Mr Napper would be paid half the proceeds of sale;[49]
(g)admits Mr Napper provided “the Images”, but such images were not provided to the interior designer in the form and manner in which she had requested them, or in the form Mr Napper said he would provide them;[50]
(h)admits Mr Napper owns the copyright in the Images; but says that Mr Napper offered and donated the Images, free of charge, for their use in the Book;[51]
(i)denies Mr Stapleton failed to give Mr Napper an opportunity to edit the Images of the Book, or to attribute the applicant to the Book; but says that Mr Napper had every opportunity to work with the interior designer in the selecting and editing of all photographs to be included in the Book, but he abandoned that opportunity by leaving and handing over to Mr Stapleton a USB stick with all the photographs on it, and stating: “This is the job from hell, here do what you like with them”;[52] and
(j)says no profit was made on the venture.[53]
[44] Response, [4]
[45] Response, [8]
[46] Response, [9]
[47] Response, [9]
[48] Response, [10]
[49] Response, [12]
[50] Response, [14]
[51] Response, [18]
[52] Response, [6], [29]
[53] Response, [31]
CLAIMS BASED ON BREACH OF CONTRACT
I have already found that Mr Napper’s assertion of what he says is the Asserted Agreement is not evidence on the basis of which it would be open to find that Mr Napper and Mr Stapleton did enter into such agreement. For that reason alone, Mr Napper’s case based on breach of the Asserted Agreement fails.
CLAIMS BASED ON INFRINGMENT OF COPYRIGHT
Statutory provision and some principles
Copyright comprises a set of exclusive rights created by the Copyright Act 1968 (Cth) (Copyright Act) in relation to different types of subject matter. The subject matter that is relevant to Mr Napper’s claims is original literary, dramatic, musical, or artistic works (works) and, more particularly, artistic works.
The Copyright Act identifies what constitutes a work,[54] the rights (copyright) that are capable of subsisting in a work,[55] the circumstances in which copyright first subsists in a work,[56] the person who is the owner of the copyright when the copyright first subsists,[57] and the circumstances in which a person infringes the copyright in a work, such as to give rise to a right of action for infringement of copyright.[58]
[54] Copyright Act, s 10
[55] Copyright Act, s 31(1)
[56] Copyright Act, s 32
[57] Copyright Act, s 35
[58] Copyright Act, s 36; s 115(1)
Subject matter
Subsections 32(1) and (2) of the Copyright Act identify the circumstances in which “copyright subsists in an original literary, dramatic, musical or artistic work”. Those subsections provide as follows:
(1)Subject to this Act, copyright subsists in an original literary, dramatic, musical or artistic work that is unpublished and of which the author:
(a)       was a qualified person at the time when the work was made; or
(b) if the making of the work extended over a period—was a qualified person for a substantial part of that period.
(2) Subject to this Act, where an original literary, dramatic, musical or artistic work has been published:
(a)       copyright subsists in the work; or
(b) if copyright in the work subsisted immediately before its first publication—copyright continues to subsist in the work;
if, but only if:
(c)       the first publication of the work took place in Australia;
(d)the author of the work was a qualified person at the time when the work was first published; or
(e)the author died before that time but was a qualified person immediately before his or her death.
Section 10 of the Copyright Act defines “artistic work” to mean (among other things) “a painting, sculpture, drawing, engraving or photograph, whether the work is of artistic quality or not”; and a “drawing” is defined to include a “diagram, map, chart or plan”.
Subsection 32(4) of the Copyright Act provides that, for the purposes of s 32, a “qualified person” means an Australian citizen, or a person resident in Australia.
Rights comprised in “copyright”
The rights the Copyright Act confers in relation to works in which copyright subsists, that is, “copyright”, are the rights specified in s 31(1)(a) and (b):
For the purposes of this Act, unless the contrary intention appears, copyright, in relation to a work, is the exclusive right:
(a)in the case of a literary, dramatic or musical work, to do all or any of the following acts:
(i)        to reproduce the work in a material form;
(ii)       to publish the work;
(iii)      to perform the work in public;
(iv)      to communicate the work to the public;
(vi)      to make an adaptation of the work;
(vii)to do, in relation to a work that is an adaptation of the first‑mentioned work, any of the acts specified in relation to the first‑mentioned work in subparagraphs (i) to (iv), inclusive; and
(b)       in the case of an artistic work, to do all or any of the following acts:
(i)        to reproduce the work in a material form;
(ii)       to publish the work;
(iii)      to communicate the work to the public . . .
Relevant to this proceeding are the exclusive rights “to reproduce the work in a material form”, “to publish the work”, and “to communicate the work to the public”. The notion of “reproduction” for the purposes of the Copyright Act “means copying”; it “does not include cases where an author . . . produces a substantially similar result by independent work without copying”.[59]
[59] Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273, at page 276 (Lord Reid), referred to with approval by Gibbs CJ in SW Hart & Co Pty Ltd v Edwards Hot Water Systems [1985] HCA 59; (1985) 159 CLR 466, at page 472
Subsection 35(2) of the Copyright Act provides that the author of a literary, dramatic, musical or artistic work is the owner of any copyright subsisting in the work by virtue of this Part.
Action for infringement of copyright
Subsection 115(1) of the Copyright Act provides that the owner of copyright may bring an action for the infringement of copyright. Subsection 36(1) of the Copyright Act provides that “the copyright in a literary, dramatic, musical or artistic work is infringed by a person who, not being the owner of the copyright, and without the licence of the owner of the copyright, does in Australia, or authorizes the doing in Australia of, any act comprised in the copyright”. Subsection 13(1) of the Copyright Act provides that an “act comprised in the copyright in a work or other subject-matter” is to be read “as a reference to any act that, under this Act, the owner of the copyright has the exclusive right to do”.
Claims based on infringement constituted by publication of Book
I am satisfied that:
(a)Mr Napper created the photographs he provided to Mr Stapleton and which were reproduced in the Book (Photographs), and for that reason is their “author”;
(b)the Photographs constitute artistic works;
(c)copyright therefore subsists in the Photographs;
(d)Mr Napper is the owner of the copyright in the Photographs;
(e)Mr Stapleton reproduced or authorised others to reproduce in the Book the Photographs;
(f)Mr Stapleton published the Photographs, and communicated the Photographs to the public, by publishing or authorising others to publish the Book containing reproductions of the Photographs, and by selling or authorising others to sell copies of the Book; and
(g)for these reasons, Mr Stapleton has engaged in conduct comprised in the copyright Mr Napper owns in the Photographs.
The question arises whether Mr Stapleton engaged in this conduct with Mr Napper’s licence; and that turns on the terms of the collaboration between the parties.
As I have already noted, it is common ground, and in any event I am satisfied the evidence establishes, that Mr Napper and Mr Stapleton agreed to collaborate to produce and sell a book about the anti-vaccine mandate protests, with Mr Napper at the very least agreeing to provide photographs he had taken during the event, and Mr Stapleton at the very least agreeing to compose the text about the event. That necessarily implied that Mr Napper and Mr Stapleton agreed they would jointly make decisions concerning the production, publication, and sale of the Book. Beyond this I find as follows:
(a)In around late February 2022 Mr Stapleton and Mr Napper agreed that Mr Napper would deal directly with the interior designer, Ms Amie McCraken, with a view to Mr Napper arranging the Photographs with the text to the point where Ms McCracken could perform the work an interior designer ordinarily performs. The basis of this finding is the admitted fact that Mr Napper directly paid $650 to Ms McCracken.
(b)The collaboration between Mr Napper and Mr Stapleton was subject to the partly implied and partly express term that the parties would share the costs of producing and selling, and would also share any profits that would arise from the sale of, the Book. To the extent the term is implied, it arises from the collaboration itself; and to the extent the term is express it arises from the conversations each of Mr Napper and Mr Stapleton say they had with each other at the time they first discussed the possibility of their collaborating to publish a book. Moreover, the existence of the term is supported by Mr Napper having paid half of the interior designer’s fees.
(c)The terms of the collaboration were altered in a minor way at the conclusion of the meeting of 24 March 2022. The parties agreed that Mr Napper would cease to be responsible for dealing directly with the interior designer; and that Mr Stapleton, using the Photographs, would deal with the interior designer, with Mr Napper and Mr Stapleton continuing to share the costs and profits of producing and selling the Book.
The consequence of these findings is that Mr Napper agreed to permit Mr Stapleton to use the Photographs in the publication of the Book; but he did so subject to the terms of the collaboration which necessarily implied that Mr Napper and Mr Stapleton would jointly make decisions concerning the production, publication, and sale of the Book. The collaboration did not include a term that Mr Stapleton could reproduce the Photographs in the Book, and publish and sell the Book containing reproductions of the Photographs, without Mr Napper’s approval. Mr Stapleton, however, did just that; and by doing so, Mr Stapleton infringed Mr Napper’s copyright in the Photographs within the meaning of s 36(1) of the Copyright Act.

Even if, contrary to what I have found, Mr Napper abandoned the project, and he did so in breach of the agreement pursuant to which Mr Napper had originally agreed to authorise Mr Stapleton to use the Photographs, Mr Stapleton, at most, would have been authorised to use the Photographs in a book about the anti-vaccine mandate policies in which only Mr Napper’s photographs appeared. At no time, however, did Mr Napper permit Mr Stapleton to use the Photographs in a book in which another person’s photographs would also appear. Thus, by Mr Stapleton’s reproducing or causing to reproduce the Photographs in the Book, together with photographs another person created, and Mr Stapleton’s publishing or causing to publish the Book, Mr Stapleton would have infringed Mr Napper’s copyright in the Photographs within the meaning of s 36(1) of the Copyright Act, even if Mr Napper had breached or abandoned the agreement he made with Mr Stapleton.
In his counsel’s written submissions, Mr Stapleton submits that, after Mr Napper received Mr Stapleton’s text message of 18 May 2022, Mr Napper “forfeited his rights to final approval”.[60] The basis of this submission appears to be the following matters and contentions:
[60] Respondent’s Outline of Argument, [22]
(a)By 9 April 2022 there had been a breakdown of the relationship between Mr Napper and Mr Stapleton. [61]
[61] Respondent’s Outline of Argument, [16]
(b)By the message he sent to Mr Napper on 9 April 2022, Mr Stapleton suggested a new agreement, namely, that the Book be published under “A Sense of Place Magazine”, with a fee of up to $2,500 being paid to Mr Napper from the sales of the Book.[62]
[62] Respondent’s Outline of Argument, [17]
(c)Mr Stapleton acknowledged to Mr Napper that most books like the Book do not make money.[63]
[63] Respondent’s Outline of Argument, [18]
(d)Mr Napper acknowledged in his return text message that he could have sold many copies of the Book if he had copies. Mr Stapleton submits he “took this as acceptance of his offer, and stated “Alright well it’s only a few days work”.”[64] The basis of this submission is a statement contained in an affidavit Mr Stapleton made on 30 April 2024 which I refused Mr Stapleton leave to read at the hearing. In paragraph 14 of that affidavit Mr Stapleton says he took Mr Napper’s stating “I could have sold many if I had copies” “to be approval to proceed and publish the book”.
[64] Respondent’s Outline of Argument, [19]
(e)On 18 May 2022 Mr Napper messaged Mr Stapleton requesting an update on the Book. Mr Stapleton responded that it had taken him weeks “to sort it all out and now it’s with Amie”. [65]
(f)Mr Napper had the opportunity, which he did not take, to:[66]
(i)inform Mr Stapleton that he was not authorising the use of his photographs;
(ii)advise Mr Stapleton and the interior designer that the images he provided were not enhanced, and thus not suitable for publication;
(iii)contact and work with the interior designer to fulfil his obligations to arrange for the final layout of the Book; and
(iv)ensure he was satisfied with the attribution and crediting of the photographs that were to appear in the Book.
(g)Mr Napper knew Mr Stapleton was proceeding to publication, and that Mr Napper had endorsed this “explicitly and implicitly”; and, by “failing to utilise the opportunity to contact the interior designer directly and fulfil his obligations under the original agreement, namely, to act a photo editor and layout designer, the Applicant forfeited his rights to final approval”.[67]
[65] Respondent’s Outline of Argument, [20]
[66] Respondent’s Outline of Argument, [21]
[67] Respondent’s Outline of Argument, [22]
I do not accept Mr Stapleton’s submission.
(a)First, it is inconsistent with Mr Stapleton’s response to the statement of claim. Mr Stapleton there asserts that Mr Napper abandoned the collaboration by leaving and handing over to Mr Stapleton a USB stick with all the photographs on it, and stating: “This is the job from hell, here do what you like with them”. That is intended to be a reference to words Mr Stapleton says Mr Napper uttered at the meeting of 24 March 2022. Mr Stapleton does not allege Mr Napper forfeited any right to be consulted before publication of the Book on the basis of the text messages of 9 April 2022, or that on 9 April 2022 Mr Stapleton considered that Mr Napper had given him permission to publish his photographs without their being any need for Mr Stapleton to consult Mr Napper.
(b)Second, it is inconsistent with the text message Mr Stapleton sent to Mr Napper on 8 July 2022, where Mr Stapleton asserts that Mr Napper’s “final words were do what you like”. That was a reference to the meeting of 24 March 2022. Mr Stapleton does not allege in his response that he published the Book without any further communications with Mr Napper because, on 9 April 2022, or at some other time, he understood Mr Napper had given him permission to publish the Book containing photographs Mr Napper had taken.
(c)Third, Mr Stapleton’s text of 9 April 2022 cannot reasonably be construed as an offer. Mr Stapleton said nothing more than that he “was thinking of just putting it out under Sense of Place Magazine; and checking with you if you had any objects [sic] to use of your pics and suggesting we reach some agreement where if there is any money, we pay you up to 2500 for their use; although most books do not make money”. This text envisaged that if Mr Stapleton were to put “out under Sense of Place Magazine”, he would check with Mr Napper if Mr Napper had any objection to Mr Stapleton using Mr Napper’s photographs, and suggesting reaching an agreement that Mr Napper be paid $2,500. Mr Stapleton did not at any time, however, check if Mr Napper would have any objections to his photographs being used; and he did not suggest to Mr Stapleton that he be paid $2,500.
(d)Fourth, even if Mr Napper had forfeited his right to be consulted before Mr Stapleton were to publish the Book, that forfeiture could only have related to the publication of the Book on the basis of which Mr Napper and Mr Stapleton agreed the Book would be published, namely, that Mr Napper, and Mr Napper alone, would provide the photographs, and Mr Stapleton, and Mr Stapleton alone, would provide the text. Mr Napper did not authorise Mr Stapleton, and Mr Stapleton did not request Mr Napper’s permission, to publish a Book which included photographs taken by another person or other persons with the photographs Mr Napper provided to Mr Stapleton.
Claims based on infringement constituted by posting on social media
Although not pleaded in the statement of claim, Mr Napper (as I have already noted) adduced evidence which shows that on 6 February 2023 Mr Stapleton uploaded a post on the Facebook Page of a “A Sense of Place Magazine” using one of the Photographs;[68] and from 2 to 10 February 2023 Mr Stapleton uploaded some of the Photographs to blogs that appear on Mr Stapleton’s webpage “ Mr Stapleton did not object to this evidence being admitted.
[68] Affidavit J Napper 30.01.2024, [50]; annexure JN-2
[69] Affidavit J Napper 30.01.2024, [51]; annexure JN-2
Mr Stapleton does not deny that he posted the photographs; and he does not say Mr Napper permitted him to use his photographs in this way. By uploading those photographs, therefore, Mr Stapleton infringed Mr Napper’s copyright in the photographs Mr Stapleton uploaded.
Claim based on breach of moral right of attribution
Subsection 193(1) of the Copyright Act provides that the “author of a work has a right of attribution of authorship in respect of the work”. Subsection 193(2) specifies what that right is:
The author’s right is the right to be identified in accordance with this Division as the author of the work if any of the acts (the attributable acts) mentioned in section 194 are done in respect of the work.
In the case of artistic works (such as a photograph), s 194(2) of the Copyright Act identifies the following as the “attributable acts”:
(a)       to reproduce the work in a material form;
(b)      to publish the work;
(c)       to exhibit the work to the public;
(d)      to communicate the work to the public.
The author of a work may be identified by any reasonable form of identification;[70] but an identification of the author of a work must be clear and reasonably prominent.[71] Such identification will be taken to be reasonably prominent in the case of the reproduction of the work if the identification of the author is included on each reproduction “in such a way that a person acquiring the reproduction or copy will have notice of the author’s identity”.[72]
[70] Copyright Act, s 195(1)
[71] Copyright Act, s 195AA
[72] Copyright Act, s 195AB
The right of attribution that an author of a work has is a “moral right” as defined by s 189 of the Copyright Act. Section 195AZ provides that “[i]f a person infringes any of the moral rights of an author in respect of a work”, the author or a person representing the author may bring an action in respect of the infringement. Section 195AO of the Copyright Act provides that a “person infringes an author’s right of attribution of authorship in respect of a work if the person does, or authorises the doing of, an attributable act in respect of the work without the identification of the author in accordance with Division 2 as the author of the work”. Section 195AZA of the Copyright Act provides the remedies a Court may grant on an action for infringement of a moral right of an author. Those remedies include the granting of declarations and injunctions, and damages for any loss suffered.
It is the case that Mr Stapleton made some attempt in the Book to identify Mr Napper as the author of the photographs he created that appear in the Book. But, contrary to s 195AA of the Copyright Act, he did not do that clearly. Mr Stapleton went no further than stating that Mr Napper “provided a large number of the photographs”. It is impossible from that statement to identify Mr Napper as the author of any one of the photographs that appear in the Book. In the case of the photographs he uploaded to his blog or to the Facebook Page of a “A Sense of Place Magazine”, Mr Stapleton made no attempt to identify Mr Napper as their author.
I am satisfied, therefore, that Mr Stapleton has infringed Mr Napper’s moral right to be attributed as the author of the photographs Mr Napper created and that Mr Stapleton reproduced these photographs in the Book, or on his webpage, or on the Facebook Page of “A Sense of Place Magazine”.
CLAIMS UNDER THE ACL
The ACL applies to corporations; and in the circumstances specified in s 6 of the CC Act, the ACL may apply to persons who are not corporations. Mr Stapleton is not a corporation; and Mr Napper has not pleaded or alleged facts that would engage s 6 of the CC Act. For these reasons Mr Napper has not established that Mr Stapleton had engaged in conduct in contravention of s 18 or s 29(1)(g) or s 29(1)(h) of the ACL.
REMEDIES
Pecuniary remedies
In his statement of claim Mr Napper claims damages pursuant to s 115(2) of the Copyright Act in the sum of $48,584. That is alleged to represents the product of the number of the Photographs Mr Napper submits are reproduced in the Book (106) and $425, being the amount Mr Napper says he would have been entitled to charge for each Photograph, that amount being consistent with his “usual fee and experience”.[73] Mr Napper claims this amount pursuant to the “user principle”. Mr Napper also claims additional damages under s 115(4) of the Copyright Act.
Damages under s 115(2)
[73] T68.45-T69.5; T69.40- T69.45. The amount of $48,584 is not in fact the product of 425 and 106. The product of those two amounts is 45,050
Principles
Subsection 115(1) of the Copyright Act provides that the owner of a copyright may bring an action for infringement of the copyright; and s 115(2) provides that the relief a court may grant for an infringement of copyright includes damages.
It has been held that damages for infringement of copyright may be assessed by applying the “licensing fee” approach or, more generally, the “user principle” approach. That approach has been authoritatively stated in the case of damages for patent infringement by Lord Wilberforce in General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd, [74] and it has been applied in actions for infringement of copyright. The “user principle” requires the Court to assess a notional licence fee;[75] and in Universal Music Publishing Pty Ltd v Palmer (No 2),[76] Katzmann J held that the correct approach to assessing a notional licence fee is the approach the Court of Appeal of New Zealand stated in The New Zealand National Party v Eight Mile Style, LLC (emphasis added):[77]
[74] General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [1975] 1 WLR 819, at pages 826-827, and page 833
[75] Universal Music Publishing Pty Ltd v Palmer (No 2) [2021] FCA 434, at [396]
[76] Universal Music Publishing Pty Ltd v Palmer (No 2) [2021] FCA 434, at [450]
[77] The New Zealand National Party v Eight Mile Style, LLC [2018] NZCA 596, at [29]
(i)        The hypothesis is that the actual licensor and the actual infringer are willing to negotiate with each other as they are, with their strengths and weaknesses, in the market as it existed at the date of the infringement. Accordingly the task of the court is to assess the value of the use to the defendant, not to a hypothetical person.
(ii)      However, any impecuniosity on the part of the notional licensee is to be disregarded, as are the personal characteristics of the parties (eg an easy‑going or aggressive nature), as opposed to the objective factors with which they were faced. Such matters are not considered to provide any guidance as to what the right is worth.
(iii)      The fact that one or both parties would not in fact have reached an agreement is irrelevant.
(iv)      The terms of any notional licence must reflect the actual infringement. Accordingly, where only part of a copyright work has been infringed, the notional licence is a licence to carry out the infringing act and not a licence to use the whole of the copyright work. The period of the licence is the period of actual infringement. Where the infringer enjoyed exclusivity in practice, the notional licence should accord with the reality. Likewise, the licence should permit the infringer to contract with others on the terms on which it actually contracted.
(v)       Where there has been nothing like an actual negotiation between the parties, it is reasonable for the court to look at the eventual outcome and to consider whether or not that is a useful guide to what the parties would have thought at the time of their hypothetical bargain.
(vi)      The court can take into account other relevant factors, and in particular delay on the part of the claimant in asserting its rights.
(vii)      It is relevant under this head that the defendant could have arrived at the same result by lawful means if the parties can be expected to have taken that fact into account in their hypothetical negotiation. That alternative need not have had all the advantages or other attributes of the infringement.
(viii)     In the absence of comparable licences or other compelling evidence the royalty may be based on the “available profits” method: the defendant’s actual profits are calculated; it is assumed that the parties would have accurately predicted these profits when negotiating; the profits are then (in effect) divided between the claimant and the defendant.
(xi)     In some cases it may be appropriate to award as damages the cost of producing or commissioning the material in a form which did not infringe copyright.
(x)       In a case within this group, the court may have to call into play “inference, conjecture and the like”, and apply “a sound imagination and the practice of the broad axe”.
Determination
Although Mr Napper relies on the judgment of Katzmann J in Universal Music, he does not in terms submit that the $425 he claims for each photograph he alleges Mr Stapleton reproduced in the Book represents the notional royalty that he and Mr Stapleton would have negotiated. The $425 is said to be what Mr Napper “would usually charge” for a photograph, given his experience.[78] I asked Ms Givoni, who appeared for Mr Napper, whether there was any evidence that Mr Napper in fact charged that amount for his photographs. Ms Givoni did not identify any evidence; and in fact there is no evidence. Even if, however, there was evidence that Mr Napper usually charged $425 per photograph, that would not represent the notional fee for the use Mr Stapleton in fact made of the Photographs.
[78] T68.45-T69.5
The most relevant matter to assessing a notional royalty for Mr Stapleton’s use of the Photographs is the agreement Mr Napper and Mr Stapleton made about what Mr Napper would be paid; and that is an amount equal to the difference between the proceeds of sale of the Book and the costs of producing and selling the Book. In his affidavit filed on 12 March 2024 Mr Stapleton says that he sold approximately 150 copies of the Book, and he otherwise made no profit from the proceeds of sale.[79] In his affidavit filed on 6 April 2024 Mr Napper asserts that Mr Stapleton did make a profit from the sale of the Book, and in support of that assertion Mr Napper annexes what he describes as “copies of the sales report of the Book provided by the Respondent”.[80] Mr Napper, however, does not say, and Ms Givoni made no submission about the profit those documents show was made on sales of the Book. On my interpretation of the documents, a profit of $249.52 was made on the sale of 28 copies of the Book in connection with the “Reignite Democracy function in 2022”, and a profit of $134.53 was made for the period 30 June 2023 to 22 November 2023. Mr Napper’s 50% share of the profits, therefore, would be $192.02.[81]
[79] Affidavit W J Stapleton 12.03.2024, [12]
[80] Affidavit J Napper filed 06.04.2024, [19]; annexure JN-3
[81] ($249.52 + $134.53)/2 = $192.02
It is the case that Mr Napper says that, had he been consulted before the Book was published, the Book would have been better quality and, therefore, would have generated higher sales. That may be so; but there is no evidence on the basis of which I could find that, had Mr Napper been given the opportunity to participate in the production of the Book, that would have made any material difference in the net revenues the Book would have earned; and there is no evidence on the basis I could find that additional costs would not have been incurred to produce a better quality version of the Book.
I therefore assess Mr Napper’s damages at $192.02.
Additional damages under s 115(4)
Subsection 115(4) of the Copyright Act provides:
Where, in an action under this section:
(a)       an infringement of copyright is established; and
(b)      the court is satisfied that it is proper to do so, having regard to:
(i)        the flagrancy of the infringement; and
(ia)      the need to deter similar infringements of copyright; and
(ib)the conduct of the defendant after the act constituting the infringement or, if relevant, after the defendant was informed that the defendant had allegedly infringed the plaintiff's copyright; and
(ii)whether the infringement involved the conversion of a work or other subject-matter from hardcopy or analog form into a digital or other electronic machine-readable form; and
(iii)any benefit shown to have accrued to the defendant by reason of the infringement; and
(iv)      all other relevant matters;
the court may, in assessing damages for the infringement, award such additional damages as it considers appropriate in the circumstances.
In Aristocrat Technologies Australia Pty Limited v D.A.P. Services (Kempsey) Pty Limited (in liquidation) Black CJ and Jacobson J made the following observations about s 115(4) of the Copyright Act:[82]
40 Where an infringement of copyright is established the Court may, in assessing damages, award additional damages if it is satisfied that it is proper to do so having regard to the flagrancy of the infringement and the other matters referred to in s 115(4)(b).
41 Flagrancy is not an essential prerequisite for an award of additional damages. It is sufficient if the Court is satisfied that any one or more of the circumstances set out in s 115(4)(b) is established; Raben Footwear v Polygram RecordsInc (1997) 75 FCR 88 at 93 (Burchett J), 103 (Tamberlin J), 104 (Lehane J); see also Polygram Pty Limited v Golden Editions Pty Limited (1997) 76 FCR 565 at 575 (Lockhart J); Sony Entertainment (Australia) Limited v Smith [2005] FCA 228; (2005) 215 ALR 788 at [158].
42 Additional damages under s 115(4) may be awarded on principles that correspond to those governing awards of aggravated and exemplary damages at common law; Autodesk Inc v Yee (1996) 68 FCR 391 at 394 (Burchett J). The principle stated in Lamb v Cotongo [1987] HCA 47; (1987) 164 CLR 1 at 9 – 10, cited by Rares J at [114] is therefore applicable.
43 The objectives of an award of additional damages include deterrence; s 115(4)(b)(ia). An element of penalty is an accepted factor in the remedy; Autodesk v Yee at 384.
44 One of the factors referred to in s 115(4)(b) is any benefit shown to have accrued to a defendant by reason of the infringement; see 115(4)(b)(iii). In construing the English equivalent provision, Brightman J said that “benefit” implies that the defendant has reaped a pecuniary benefit in excess of the damages otherwise payable; Ravenscroft v Herbert [1980] RPC 193 at 208. It is possible, however, that the benefit need not be confined to a pecuniary one; Polygram v Golden Editions at 576.
45 There need not be any proportionality between the amount of compensatory damages awarded under s 115(2) and the amount of additional damages ordered under s 115(4); Raben at 93, 103, 104; see also Microsoft Corporation v PC Club of Aust Pty Limited [2005] FCA 1522; (2005) 148 FCR 310 at 409 – 410 (Conti J).
[82] Aristocrat Technologies Australia Pty Limited v D.A.P. Services (Kempsey) Pty Limited (in liquidation) [2007] FCAFC 40, at [40]-[45]

Mr Napper submits that Mr Stapleton’s infringement of copyright was flagrant because he was aware that Mr Napper was the owner of copyright in the photographs, yet he continued to make the Book available for sale and sell copies of the Book. Further, Mr Napper submits that Mr Stapleton profited from the infringement.
I am satisfied that Mr Stapleton’s infringement of Mr Napper’s copyright in the Photographs was flagrant. As is apparent from the text message Mr Stapleton sent to Mr Napper on 9 April 2022, Mr Stapleton was aware Mr Napper was the owner of copyright in the Photographs. Further, on 8 July 2022 Mr Napper informed Mr Stapleton that he objected to the publication of the Photographs in the Book, and in effect demanded that Mr Stapleton withdraw the Book, and commit to co-operating with Mr Napper to produce a second edition. Mr Stapleton, however, asserted, and continued to assert that Mr Napper had abandoned the collaboration, and persisted with offering the Book for sale, even after Mr Napper commenced this proceeding. Further, in February 2023 Mr Stapleton uploaded some of Mr Napper’s photographs without seeking Mr Napper’s permission.
I am also satisfied that considerations of deterrence are important. Additional damages should be set in an amount that will serve to deter persons from using another person’s copyright works other than within the terms agreed by the copyright owner.
Mr Stapleton’s flagrant disregard of Mr Napper’s copyright, and the need to deter similar conduct, however, needs to be weighed with Mr Stapleton’s not having materially benefited from his infringing conduct. In those circumstances, I consider it is appropriate to assess additional damages in the amount of $12,000.
Damages under s 195AZA of the Copyright Act?
There is no evidence on the basis of which I could find that Mr Napper suffered any loss because of Mr Stapleton’s infringement of Mr Napper’s moral right to have been attributed as an author of the Photographs reproduced in the Book, or which Mr Stapleton uploaded. I am therefore not satisfied Mr Napper has suffered any loss for which damages may be awarded
NON-PECUNIARY REMEDIES
Mr Napper seeks a final injunction restraining Mr Stapleton from using the Photographs.
The principles for granting permanent injunctions for infringement of copyright was recently stated in the judgment of Nicholas, Burley, and Rofe JJ in Redbubble Ltd v Hells Angels Motorcycle Corporation (Australia) Pty Limited:[83]
It has never been doubted that a permanent injunction is anything other than a discretionary remedy. However, in the intellectual property field, specifically in cases involving the protection of patent, copyright or trade mark owners' statutory rights, a permanent injunction is usually granted as a matter of course against a respondent who is found to have infringed those rights, at least if there is a prospect that the respondent will engage in further acts of infringement. It is in that sense that it is sometimes said that the rights owner has a prima facie entitlement to a permanent injunction once infringement of its exclusive right is established.
[83] Redbubble Ltd v Hells Angels Motorcycle Corporation (Australia) Pty Limited [2024] FCAFC 15, at [243]
I am satisfied that unless Mr Stapleton is restrained from doing so, he will continue to offer for sale and sell the Book containing the Photographs; and there is a substantial risk that Mr Stapleton will upload to the website or the social media account or accounts he operates reproductions of the Photographs. I propose, therefore, to order a permanent injunction. The photographs that I propose will be the subject of the injunction will be identified by reference to the USB Mr Stapleton says Mr Napper gave him during the meeting of 24 March 2022, and the photographs that are reproduced in the attachments to the emails Mr Napper sent to Mr Stapleton in the late evening of 25 March 2022.
Mr Napper also applies for a delivery up order. This Court, being a court of law and equity,[84] and, moreover, having the power, in relation to matters in which it has jurisdiction, to make orders of such kinds, including interlocutory orders, as the Court considers appropriate, has the powers the High Court of Chancery had to order delivery up or destruction of articles that infringe a party’s intellectual property rights. The making of an order for delivery up has been viewed as an aid to an injunction that has been ordered to restrain the infringer from continuing to engage in infringing conduct. In Mergenthaler Linotype Co v Intertype Co Ltd, Russell J stated the purpose for which an order for delivery and destruction may be made:[85]
[The applicant] is protected as to further manufacture of infringing articles by the injunction which he obtains, but there remains this, that, so long as there is still what I might call infringing stock in the possession of the infringer, he may be subject to too serious and grave a temptation and may thereby be tempted to commit a breach of the injunction which he would not otherwise commit. Accordingly, in order to assist the [applicant] and as a relief ancillary to the injunction he has obtained, the Court may in its discretion make an order for the destruction or delivery up of infringing articles.
[84] Federal Circuit and Family Court of Australia Act 2021 (Cth), s 10
[85] Mergenthaler Linotype Co v Intertype Co Ltd (1926) 43 RPC 381, 382
An order for delivery up has been made in relation to infringing software.[86]
[86] IPC Global Pty Ltd v Pavetest Pty Ltd (No 2) [2016] FCA 1332, at [8]
It is appropriate that, in addition to an injunction, I make a delivery up and destruction order.
DISPOSITION
I propose to grant a permanent injunction restraining Mr Stapleton from reproducing, publishing, or communicating to the public the Photographs. I propose to frame the injunction by reference to the photographs that are stored in the USB Mr Stapleton says he received from Mr Napper and which Mr Napper still holds, and the photographs that are reproduced in the attachment to the emails Mr Napper sent to Mr Stapleton in the late evening of 25 March 2022.
I also propose to make an order requiring Mr Stapleton to file an affidavit in which he identifies all hard and electronic copies of the Books and Photographs he may hold, and to destroy those copies. I will, however, allow the parties liberty to apply to vary the order I propose to make because I have not given them an opportunity to make submissions on the precise form of the order for delivery up and destruction.
I will make an order that Mr Stapleton pay compensatory damages in the amount of $192.02, and additional damages pursuant to s 115(4) of the Copyright Act in the sum of $12,000.
Finally, there is no apparent reason why costs should not follow the event. I therefore propose to order that Mr Stapleton pay Mr Napper’s costs, excluding the costs of the mediation (which is the subject of separate reasons for judgment). I will, however, grant the parties liberty to apply on 35 days’ notice to vary to discharge the order for costs I propose to make.

I certify that the preceding ninety (90) numbered paragraphs are a true copy of the Reasons for Judgment of Judge Manousaridis.
Associate:
Dated: 2 May 2025

File number(s):	BRG 208 of 2023
Judgment of:	JUDGE MANOUSARIDIS
Date of judgment:	2 May 2025
Catchwords:	INTELLECTUAL PROPERTY – copyright – applicant and respondent agreed to collaborate in the production of a book with the applicant agreeing to provide photographs and the respondent to compose the text – respondent published and sold a book containing photographs taken by the applicant without the applicant’s prior approval – whether the respondent has the applicant’s licence to reproduce the applicant’s photographs – the respondent did not have applicant’s licence – by publishing and selling the book the respondent infringed the applicant’s copyright in the photographs – the respondent also infringed the applicant’s copyright in photographs he had taken by the respondent uploading them to his business’s Facebook Page and to a webpage he operates – injunction, delivery up, and compensatory and additional damages awarded.
Legislation:	Competition and Consumer Protection Act 2010 (Cth), s 6, Sch 2: ss 18, 29(1)(g), (h) Copyright Act 1968 (Cth), ss 10, 13(1), 31(1), 32, 35, 36, 115(1), (2), (4), 189, 193(1), (2), 194(2), 195(1), 195AA, 195AB, 195AO, 195AZ, 195AZA Federal Circuit and Family Court of Australia Act2021 (Cth), s 10
Cases cited:	Aristocrat Technologies Australia Pty Limited v D.A.P. Services (Kempsey) Pty Limited (in liquidation) [2007] FCAFC 40 General Tire & Rubber Co. Respondents v Firestone Tyre & Rubber Co. Ltd [1975] 1 WLR 819 IPC Global Pty Ltd v Pavetest Pty Ltd (No 2) [2016] FCA 1332 Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273 Mergenthaler Linotype Co v Intertype Co Ltd (1926) 43 RPC 381 Redbubble Ltd v Hells Angels Motorcycle Corporation (Australia) Pty Limited [2024] FCAFC 15 SW Hart & Co Pty Ltd v Edwards Hot Water Systems [1985] HCA 59; (1985) 159 CLR 466 The New Zealand National Party v Eight Mile Style, LLC [2018] NZCA 596 Universal Music Publishing Pty Ltd v Palmer (No 2) [2021] FCA 434
Division:	General
Number of paragraphs:	90
Date of hearing:	30 April 2024
Place:	Sydney
Solicitor for the Applicant:	Ms S Givoni, Sharon Givoni Consulting
Counsel for the Respondent:	Mr P Carasco
Solicitor for the Respondent:	Transitional Legal Pty Ltd

Table of Corrections
5 May 2025	In line 3 of paragraph 66 of the judgment “not” has been added before the words “pleaded or alleged facts”.

BRG 208 of 2023
FEDERAL CIRCUIT AND FAMILY COURT OF AUSTRALIA (DIVISION 2)
BETWEEN:	JOHN NAPPER Applicant
AND:	WILLIAM JOHN STAPLETON Respondent

ORDER MADE BY:	JUDGE MANOUSARIDIS
DATE OF ORDER:	2 MAY 2025